Barkley International Incorporated

Trademark Trial and Appeal Board

May 4, 2011

No. 77311059 (T.T.A.B. May. 4, 2011)

Mailed:
May 4, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Barkley International Incorporated
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Serial No. 77311059
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Peter Andrew Koziol of Assouline & Berlowe, P.A., for
Barkley International Incorporated.

Sara N. Benjamin, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Bucher, Taylor and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Barkley International Incorporated has filed an
application to register on the Principal Register the mark
HOMER, in standard character form, for services which were
ultimately identified as “financial engineering software for
institutions, accredited investors, governments, hedge
funds, and bankers to measure, process, analyze, manage,
and/or transact securities, derivatives namely financial
engineering software for use in funds and investment risk
management” in International Class 9, and “financial
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77311059
2
engineering services for institutions, accredited investors,
governments, and bankers, namely, financial risk analysis,
financial risk consultancy, financial investment and risk
information, financial risk management, financial risk
evaluation, structured financial asset management, and
financial securities hedging, namely, hedge fund investment
services; financial investment risk management and financial
investment market value equity insurance consultancy for
institutions, accredited investors, governments, hedge
funds, and bankers; asset value management services, namely
asset market value financial risk mitigation and asset
equity insurance consultancy for institutions, accredited
investors, governments, hedge funds, and bankers” in
International Class 36.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, when applied to the identified
goods and services, so resembles the following three marks,
all registered to the same registrant as to be likely to
cause confusion, mistake, or deception:

1 Application No. 77311059, filed October 23, 2007 under Section
1(b) of the Trademark Act, claiming a bona fide intent to use.
Ser No. 77311059
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1. HOMER, in typed drawing format, for “savings and loan
financial services,” in International Class 36;2
2. HOMER’S CLUB, in typed drawing format, for “savings and
loan services,” in International Class 36;3 and
3. HOMER’S CLUB and design, as shown below, for “savings
and loan services,” in International Class 36.4:

Applicant and the examining attorney filed briefs, and
applicant filed a reply brief.
We reverse the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.

2 Registration No. 1106282, issued November 14, 1978. Sections 8
and 15 affidavits accepted and acknowledged. Renewed twice.
3 Registration No. 1057936, issued February 1, 1977. Sections 8
and 15 affidavits accepted and acknowledged. Renewed twice.
4 Registration No. 1057937, issued February 1, 1977. Sections 8
and 15 affidavits accepted and acknowledged. Renewed twice.
Ser No. 77311059
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2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). Another key factor in this case concerns the
conditions under which and buyers to whom sales of the goods
and services at issue are made.
For our analysis of the likelihood of confusion, we
have chosen to focus on Registration No. 1106282 for the
mark HOMER (in typed format) for “savings and loan financial
services,” since it covers the most similar mark and the
most relevant services. If we find a likelihood of
confusion with the ‘282 registration, then it would serve
little purpose to consider the other registrations.
Conversely, if there is no likelihood of confusion with the
‘282 registration, there would certainly be no likelihood of
confusion with the HOMER’S CLUB marks – especially with the
special form drawing depicting its lion mascot that
registrant describes in its advertising as ”the homeliest
lion,” “wind-tossed,” and with his “eyes crossed.”
Applicant, in urging reversal of the refusal to
register, argues that consumers will not believe that the
Ser No. 77311059
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goods and services offered by registrant and applicant under
their respective marks emanate from the same source because
the goods and services are different, applicant’s consumers
are sophisticated, the decision to purchase applicant’s
goods and services is not made on impulse, and the normal
trade channels do not overlap. Applicant has supported its
position with the declaration of Joseph D. Koziol, Managing
Director of applicant, along with various articles,
definitions, and related Internet printouts.
We first consider the du Pont factor of
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont de Nemours
& Co., 177 USPQ at 567. The mark in Registration No.
1106282 is HOMER, in typed drawing format. Applicant’s
mark is HOMER, in standard character form.
Accordingly, they are legally identical. Applicant
contends that the mark in the cited registration is
weak. In support of this argument, applicant cites a
few third-party registrations that contain the term
“Homer” as evidence that consumers will distinguish its
mark from that in the cited registration. Third-party
registrations may be used to show that a term has been
commonly registered for its suggestive meaning.
Ser No. 77311059
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However, applicant has not provided sufficient evidence
of a pattern of third-party usage of the term for use
with related goods and services, instead submitting
merely a list of registrations containing the word
HOMER as well as one use-based registration for THE
HOMER FUND. As advised by the examining attorney, in
order to make a third-party registration of record, a
copy of the registration, either a copy of the paper
USPTO record, or a copy taken from the electronic
records of the Office should be submitted. In re Volvo
Cars of North America Inc., 46 USPQ2d 1455, 1456 n.2
(TTAB 1998); and In re Duofold Inc., 184 USPQ 638, 640
(TTAB 1974). Merely listing such registrations, as
applicant has done here, is insufficient to make them
of record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861
n. 2 (TTAB 1998). Accordingly, we sustain the
examining attorney’s objection to the list of
registrations. The existence of one or even a few
other use-based registrations with the term HOMER is
not sufficient for us to find suggestive meaning in the
term for purposes of our analysis.
Meanwhile, as our precedent indicates, even the owner
of a weak mark is entitled to protection from likelihood of
confusion. See Giant Food Inc. v. Roos and Mastacco, Inc.,
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218 USPQ 521 (TTAB 1982). Accordingly, the first du Pont
factor favors a finding of likelihood of confusion.
We next turn to a consideration of the similarity or
dissimilarity of the goods and services. It is well-settled
that the question of likelihood of confusion must be
determined based on an analysis of the services recited in
the application vis-à-vis the services recited in the
registration. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). It is enough that the goods and services
are related in some manner or that some circumstances
surrounding their marketing are such that they would be
likely to be seen by the same persons under circumstances
which would give rise, because of the marks used therewith,
to a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association between the producers of registrant’s and
applicant’s goods or services. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991), and the cases cited therein.
We find in this case, however, that applicant’s goods
and services are unrelated to the registrant’s services for
purposes of the second du Pont factor. Applicant’s goods
and services include “financial engineering software for
Ser No. 77311059
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institutions, accredited investors, governments, hedge
funds, and bankers to measure, process, analyze, manage,
and/or transact securities, derivatives namely financial
engineering software for use in funds and investment risk
management” as well as “financial engineering services for
institutions, accredited investors, governments, and
bankers, namely, financial risk analysis, financial risk
consultancy, financial investment and risk information,
financial risk management, financial risk evaluation,
structured financial asset management, and financial
securities hedging, namely, hedge fund investment services;
financial investment risk management and financial
investment market value equity insurance consultancy for
institutions, accredited investors, governments, hedge
funds, and bankers; asset value management services, namely
asset market value financial risk mitigation and asset
equity insurance consultancy for institutions, accredited
investors, governments, hedge funds, and bankers.” The
services in the cited registration are “savings and loan
financial services.”
Applicant argues that the goods and services offered
under its mark are distinctly different than those offered
under the registered mark and are “narrowly tailored such
that there is no overlap between the two.” (applicant’s
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brief at 13). The examining attorney, on the other hand,
contends that the respective goods and services are similar
because they are financial in nature and involve potentially
overlapping clients or markets. In support of this
position, the examining attorney made of record third-party
registrations that purportedly demonstrate that consumers
are familiar with entities offering applicant’s type of
goods and services and registrant’s type of services under
the same mark. Copies of use-based, third-party
registrations may serve to suggest that the goods and
services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785 (TTAB 1993). However, on close inspection, we
find that the third-party registrations submitted into the
record by the examining attorney cover goods and services
that are distinctly different from those at issue in this
case. For example, while all of the identifications in the
third-party registrations contain some of the wording from
the application (i.e., “consulting services in the field of
risk management” or “financial services, namely, financial
asset management”), none of them contains the clear
limitation present in applicant’s identification “for
institutions, accredited investors, governments, hedge
funds, and bankers.” In accordance with Rule 501 of
Ser No. 77311059
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Regulation D of the Securities Act of 1933, “Accredited
Investors” include entities such as “banks, insurance
companies, registered investment companies, business
development companies, and small business companies;”
“charitable organizations, corporations, and partnerships
with assets exceeding $5 million”; and “businesses in which
all the equity owners are accredited investors;” and
individuals such as “directors, executive officers, or
general partners of the companies selling the securities.”
(Koziol Decl. at ¶ 10). This is overtly a very specialized
group as included in applicant’s identification of goods and
services.
Accordingly, the third-party registrations, which do
not include goods and services “for institutions, accredited
investors, governments, hedge funds, and bankers” are not
availing to show similarity of the goods and services at
issue in this case. Without evidence showing that
applicant’s goods and services are related to the
registrant’s services, the examining attorney has not met
her burden of proof on this point.
Rather, applicant’s identification covers highly
specialized financial engineering software, financial
engineering services, and other services “for institutions,
accredited investors, governments, hedge funds, and
Ser No. 77311059
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bankers,” while the cited registration covers “savings and
loan financial services.” Definitions in the record show
“financial engineering” defined as “the design and
construction of investment products to achieve specified
goals”5 and “savings and loan” defined as “a thrift
institution that is required by law to make a certain
percentage of its loans as home mortgages.”6 Accordingly, we
find that applicant’s identification, on its face, shows
that applicant’s goods and services are different from, and
would be marketed via distinct channels of trade from, those
in the cited registration. For this reason, the second and
third du Pont factors weigh against finding a likelihood of
confusion.
We turn next to the du Pont factor considering the
conditions of sale and the sophistication of the purchasers.
Although we look to the standard of care of the least
sophisticated consumer, it is clear that applicant’s goods
and services are directed toward highly sophisticated
consumers. The fact that sophisticated purchasers are the
only connection between the goods and services of the
applicant and the services of registrant weighs against a
finding of likelihood of confusion. That applicant’s
customers are sophisticated is not by itself a determinative

5 See www.equityderivatives.com.
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factor. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re
Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983). However,
circumstances suggesting care in purchasing may tend to
minimize likelihood of confusion. As our principal
reviewing Court has pointed out, “sophistication is
important and often dispositive because sophisticated end-
users may be expected to exercise greater care.” Electronic
Design & Sales Inc. v. Electronic Date Systems Corp.,
954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992). In
this case, we note that applicant’s purchasers, i.e., its
“highly sophisticated” investors are “high net worth
institutions and accredited individuals.” (applicant’s brief
at 14). Applicant requires these clients to be “accredited
investors” under the Securities Act of 1933, as defined,
supra. (Koziol decl. at ¶ 10). Under these circumstances,
we find that the purchasers of applicant’s goods and
services are extremely knowledgeable and careful in their
purchasing decisions. Moreover, since significant
financials investments are involved, as well as
sophisticated purchasers, we agree with applicant that its
goods and services are not “impulse” buys by consumers, but
rather are carefully considered decisions requiring
significant deliberation.

6 See www.wordnet.princeton.edu.
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As discussed above, we find that the evidence of record
does not support a finding that there is a likelihood of
confusion. While the marks are legally identical,
applicant’s goods and services and registrant’s services, on
their face, are distinctly different, and applicant’s goods
and services clearly are very expensive and would be bought
only by highly knowledgeable, discriminating and
sophisticated purchasers after thorough deliberation. We
therefore conclude that confusion is not likely.7
Decision: The refusal under Section 2(d) is reversed.

7 As stated above, since we find no likelihood of confusion with
Registration No. 1106282, neither would we find it for the less
similar or relevant cited registrations, Registration No. 1057936
and Registration No. 1057937.